I have summarized or quoted the most relevant parts of our IPR Policy regarding
"Royalty Free Licenses" to help us at our meeting on Feb. 7. See end of
message.
Here is my preliminary analysis of how these provisions work in general:
* Sec. 3 - Forum members must offer RF licenses to their Essential Claims
contained in any Forum guidelines, except as otherwise stated in Sec. 4.
* Sec. 4 - Members may exclude their Essential Claims from RF licenses
during a Review Period [so if they don't exclude, presumably they automatically
provide RF licenses as defined in Sec. 5.1].
* Sec. 4.2 - When a member excludes an Essential Claim during the review
period, the member can say either (1) there will be no RF license, or (2)
there will be a RF license under Sec. 5.1 except for sub (f) [meaning the
Member can offer the license "conditioned on payment of royalties, fees or
other consideration" - so the license is no longer royalty-free]
* Sec. 4.2 - a member who made "Contributions" to a guideline that
includes the member's Essential Claim cannot file an Exclusion Notice for that
Essential Claim during the Review Period [meaning, if the guideline passes the
member who made "Contributions" automatically provides a RF license as defined
in Sec. 5.1].
It seems the three possible outcomes from these provisions are as follows (but
I may be wrong):
(1) A royalty-free license as defined in Sec. 5.1 is granted (either
voluntarily if the member decides not to file an Exclusion Notice, or if the
member forgets to file an Exclusion Notice, or if the member provideed
Contributions to the guideline),
(2) A license is granted as defined in Sec. 5.1, but "conditioned on payment of
royalties, fees or other consideration" (if a proper Exclusion Notice was filed
and the member makes that choice), or
(3) No license is granted at all (if a proper Exclusion Notice was filed and
the member makes that choice).
Summary of Selected Sections from IPR Policy on Licenses
Sec. 3: Sec. 3: As a condition of CAB Forum participation, each CAB Forum
Participant shall, subject to Section 4 below, agree to make available under a
CAB Forum Royalty-Free ("RF") License, any Essential Claims related to any CAB
Forum Final Guideline or Final Maintenance Guideline. This requirement
includes Essential Claims that the Participant or its Affiliates owns and any
that the Participant or its Affiliates has the right to license without
obligation of payment or other consideration to an unrelated third party.
Sec. 4.1: During Review Period, members may exclude Essential Claims from "CAB
Forum RF Licenses"
Sec. 4.2: "Except for Essential Claims encompassed by a Participant's
Contributions that are actually incorporated into a Final Guideline or Final
Maintenance Guideline approved in accordance with the CAB Forum Guideline
approval process," members may exclude Essential Claims AND "either make an
election, (i) not to grant a license or (ii) to provide a license with all of
the requirements of Section 5.1 with the exception of subsection 5.1 f [meaning
the license may "be conditioned on payment of royalties, fees or other
consideration."]
Sec. 5.1 License Requirements
With respect to Final Guidelines or Final Maintenance Guidelines developed
under this policy, a CAB Forum Royalty-Free License shall mean a
non-assignable, non-sublicensable license to make, have made, use, sell, have
sold, offer to sell, import, and distribute and dispose of Compliant Portions
(provided that such license need not extend to any part or function of a
product (other than the Compliant Portion therein in which a Compliant Portion
is incorporated but that is not itself part of the Compliant Portion) of the
Final Guideline or Final Maintenance Guideline that:
a. shall be available to all, worldwide, whether or not they are CAB Forum
Members;
b. shall extend to all Essential Claims owned or controlled by the Participant
and/or its Affiliates;
c. may be conditioned on licensee providing notice to a buyer of its products
or services that they implement an Essential Patent of a particular entity
relating to a particular CAB Forum Final Guideline or Final Maintenance
Guideline and that licensee's right to sell the products or services to buyer,
and buyer's use of the products or services, are conditioned on the buyer's
acceptance of the same terms of the RF or RAND License granted to licensee
under the CAB Forum IPR Policy
d. may be limited to implementations of the Final Guideline and Final
Maintenance Guideline, and to what is required by the Final Guideline and Final
Maintenance Guideline;
e. may be conditioned on a grant of a reciprocal RF license (as defined in this
policy) to all Essential Claims owned or controlled by the licensee or its
Affiliates. A reciprocal license may be required to be available to all, and a
reciprocal license may itself be conditioned on a further reciprocal license
from all.
f. may not be conditioned on payment of royalties, fees or other consideration;
g. may be suspended with respect to any licensee when licensor is sued by
licensee for infringement of claims essential to implement any CAB Forum Final
Guideline or Final Maintenance Guideline;
h. may not impose any further conditions or restrictions on the use of any
technology, intellectual property rights, or other restrictions on behavior of
the licensee, but may include reasonable, customary terms relating to operation
or maintenance of the license relationship such as the following: choice of law
and dispute resolution;
i. shall not be considered accepted by an implementer who manifests an intent
not to accept the terms of the CAB Forum Royalty-Free License as offered by the
licensor.
Sec. 5.2 License Term
a. The CAB Forum RF license conforming to the requirements in this policy shall
be made available by the licensor and/or its Affiliates as long as the Final
Guideline or Final Maintenance Guideline is in effect. The term of such license
shall be for the life of the patents in question, subject to the limitations of
5.2(b).
b. If the Final Guideline or Final Maintenance Guideline is rescinded by the
CAB Forum, then no new licenses need be granted but any licenses granted before
the Final Guideline or Final Maintenance Guideline was rescinded shall remain
in effect.
Sec. 5.3: RF License continues even if member quits forum
8.1. Essential Claims
"Essential Claims" shall mean all claims in any patent or patent application in
any jurisdiction in the world that would necessarily be infringed by
implementation of any Normative Requirement in a Final Guideline or Final
Maintenance Guideline. A claim is necessarily infringed hereunder only when it
is not possible to avoid infringing it because there is no non-infringing
alternative for implementing a Normative Requirement of a Final Guideline or
Final Maintenance Guideline. Existence of a non-infringing alternative shall be
judged based on the state of the art at the time the guideline is adopted as a
Final Guideline or Final Maintenance Guideline. If a Normative Requirement in a
Final Guideline or Final Maintenance Guideline may be fulfilled by any of a
list of specified alternatives, then for determination of whether a claim is an
Essential Claim, each of the specified alternatives should be considered
independently as if it were the only method for fulfilling that requirement.
Sec. 8.3
b. "Compliant Portion" means only those specific portions of a product
(hardware, software or combinations thereof) that implement and are compliant
with all Normative Requirements of the Final Guideline or Final Maintenance
Guideline (as applicable to such portions that are adopted) and that are within
the bounds of the Scope.
c. "Contribution" means material, including Draft Guidelines, Draft Guideline
text, and modifications to other Contributions, made verbally or in a tangible
form of expression (including in electronic media) which is provided by a
Participant in the process of developing a Draft Guideline for the purpose of
incorporating such material into a Draft Guideline or a Final Guideline or
Final Maintenance Guideline. For a verbal contribution to be deemed a
Contribution hereunder it must be memorialized within approved meeting minutes
of the CAB Forum.
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